Drawing a parallel between aesthetics and functionality for design protection
28 February 2022
Drawing a parallel between aesthetics and functionality for design protection
Like many counties in the world, India has a strong law for protecting aesthetic creations by way of design registration. The design law protects aesthetic creations and not the functionality. There is often a misconception regarding the eligibility of articles or products for design registration that have utility and functionality. However, there is no barrier for registering designs for articles that are aesthetically appealing and at the same time performing a function. It is, therefore, essential to understand the difference in aesthetic and functional aspects of an article or product and their interplay while exploring the possibilities of design protection.
Legislative position in India
According to Section 2(a) of the Indian Designs Act, 2000, ‘Article’ means any article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately.
According to Section 2(d) of the Designs Act, ‘Design’ means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device.
The phrase, ‘judged solely by the eye’ is a characteristic feature of design registrations. The phrase essentially means that the design should be aesthetically appealing – a test for registration in every application for registration.
Legislative position in other jurisdictions
The United States design law provides that an article dictated primarily by functionality with no ornamental value is not a proper statutory subject matter for design registration. Also, a design with no unique or distinctive shape or appearance and dictated solely by the functionality is not proper subject matter for design registration.
In Europe, community design cannot subsist in features of appearance of a product which are solely dictated by its technical function.
In Australia, a design can be registrable if the article includes shape and/or configuration features yet serve a functional purpose.
In Russia, ‘industrial design patent’ is the term used to denote protection of the visual appearance of industrial or handicraft articles. Further, Russian law rules out eligibility for design protection specially in a case if all features visual, are defined exclusively by the technical function of the article.
It is evident from the above that in most major jurisdictions, it is the product's overall appearance that is registerable as a design and not the functionality behind it. Nonetheless, the article including shape and/or configuration features yet serving a functional purpose is registerable. However, in view of the legal jargon, applicants are often confused about this.
It is evident from the definitions above that any article or product with features 1) such as Shape, Configuration, Ornamentation and Pattern [SCOP]; 2) in two-dimensional or three-dimensional form; and 3) that enhance the overall appearance of the article, is an eligible subject matter for design protection. The definitions do not stipulate any eligibility test of technical functions of such features (SCOP). The test for evaluation of eligibility for design registration is judgement solely by eye, or the “eye test”. In other words, whether or not the features embedded in the article or product are distinguishable from existing or competing products, is a matter of external appearance.
Purpose of design registration
The purpose of design registration is to protect the aesthetic appearance of an article or product and not its function. Therefore, to assess whether a design can be registered, one must look at the aesthetics of the article and not the functionality of the article.
For example, if the article's shape, surface pattern, and configuration is dictated solely by the function it must perform, then the article cannot be registered as a design. However, if the article is designed to perform a particular function but also includes aesthetic appeal, it would still be a subject matter for the design registration. In other words, if the design of the article is not essential to perform the intended function, then such design can be protected under the Designs Act.
For example, a key with novelty only in the shape and configuration of the grooves at the portion intended to engage with levers inside the lock associated with it, cannot be registered as a design.
However, if the same key includes any other aesthetic features, for instance, the unique design of the holding portion or head, then such features of the key can still be protected under the Designs Act.
The perspective of the Indian Designs Office
The Indian Designs Office generally examines whether the article falls within the definition of Section 2(d) or not. In addition, it also questions if the article meets the requirements of novelty or originality. Therefore, applicants are expected to pinpoint the novel feature(s) of the articles (in terms of shape, configuration, ornamental, and surface pattern, either individually or in combination) in the design representations, if there are close prior arts cited in the examination report. In addition, appropriate amendments are also required to be done in novelty statements and disclaimer statements. Of course, pinpointing a specific novel feature in the design representations limits the protection of a particular design to that feature of the article. Taking the same example of the key as illustrated above, if the applicant pinpoints the novel aesthetic features, i.e., the holding portion or the head of the key, only such features will be protected by the design registration. However, this would help protect the designer’s creativity to improve the aesthetics of the key, even though the primary intended function is merely to open the lock.
The perspective of Indian Courts
The Indian Courts have evaluated the interplay of aesthetics and functionality in a few cases. For example, inEscorts Construction Equipment Ltd. v. Action Construction Equipment Pvt. Ltd, it was held that the shape of parts of a crane is dictated by a function. The particular shape was defined to interrelate with other parts mechanically. Therefore, they only had to pass the test of performing their function and not necessarily be appealing to the eye. Therefore, it did not satisfy an essential requirement for the registration of designs and was held incapable of being registered.
In Smit N Parmar v. Paresh D Patel & Vardayani Power Pvt Ltd, the Gujarat High Court dealt with the issue of alteration of ducted air conditioners. In the altered device under question, the design was such that only the air blower was visible, while the pipes and wires remained hidden. The court held that when there is an alteration to a mechanical device that appeals to the eye, it does not automatically preclude the design from registration.
The attorney’s paradox
Considering the criticality of non-functionality as an element, it is very difficult to always establish whether the design is a default cause for the product to function or is entirely aesthetic and function independent. The three major challenges are:
- To undoubtedly determine that the design and aesthetics are purely functional,
- The tendency of a unique design to have an overlap between function and aesthetics, and
- Functionality being a subjective abstract.
Not all articles are designed with an aim to have aesthetic appeal. However, articles that are designed to perform an intended function may also have aesthetic appeal which deserves IP protection. Creative aesthetic features of such articles if not protected, are open for piracy or copying. Under the Designs Act, there is no barrier for registering a design for an article performing the intended function but also having aesthetic value. So, go ahead and protect your articles under the Designs Act even if they were intended only to perform a function.